Article 1709: Patents
[Text as received from U.S. government email server, with whitespace
cleaned up.]
1. Subject to paragraphs 2 and 3, each Party shall make patents
available for any inventions, whether products or processes, in all
fields of technology, provided that such inventions are new, result
>from an inventive step and are capable of industrial application. For
purposes of this Article, a Party may deem the terms "inventive step"
and "capable of industrial application" to be synonymous with the
terms "non-obvious" and "useful", respectively.
2. A Party may exclude from patentability inventions if
preventing in its territory the commercial exploitation of the
inventions is necessary to protect ordre public or morality, including
to protect human, animal or plant life or health or to avoid serious
prejudice to nature or the environment, provided that the exclusion is
not based solely on the ground that the Party prohibits commercial
exploitation in its territory of the subject matter of the patent.
3. A Party may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the
treatment of humans or animals;
(b) plants and animals other than microorganisms; and
(c) essentially biological processes for the production of
plants or animals, other than non-biological and
microbiological processes for such production.
Notwithstanding subparagraph (b), each Party shall provide for the
protection of plant varieties through patents, an effective scheme of
sui generis protection, or both.
4. If a Party has not made available product patent protection
for pharmaceutical or agricultural chemicals commensurate with
paragraph 1:
(a) as of January 1, 1992, for subject matter that relates
to naturally occurring substances prepared or produced by,
or significantly derived from, microbiological processes and
intended for food or medicine, and
(b) as of July 1, 1991, for any other subject matter,
that Party shall provide to the inventor of any such product or its
assignee the means to obtain product patent protection for such
product for the unexpired term of the patent for such product granted
in another Party, as long as the product has not been marketed in the
Party providing protection under this paragraph and the person seeking
such protection makes a timely request.
5. Each Party shall provide that:
(a) where the subject matter of a patent is a product, the
patent shall confer on the patent owner the right to prevent
other persons from making, using or selling the subject
matter of the patent, without the patent owner's consent;
and
(b) where the subject matter of a patent is a process, the
patent shall confer on the patent owner the right to prevent
other persons from using that process and from using,
selling, or importing at least the product obtained directly
by that process, without the patent owner's consent.
6. A Party may provide limited exceptions to the exclusive rights
conferred by a patent, provided that such exceptions do not
unreasonably conflict with a normal exploitation of the patent and do
not unreasonably prejudice the legitimate interests of the patent
owner, taking into account the legitimate interests of other persons.
7. Subject to paragraphs 2 and 3, patents shall be available and
patent rights enjoyable without discrimination as to the field of
technology, the territory of the Party where the invention was made
and whether products are imported or locally produced.
8. A Party may revoke a patent only when:
(a) grounds exist that would have justified a refusal to
grant the patent; or
(b) the grant of a compulsory license has not remedied the
lack of exploitation of the patent.
9. Each Party shall permit patent owners to assign and transfer
by succession their patents, and to conclude licensing contracts.
10. Where the law of a Party allows for use of the subject matter
of a patent, other than that use allowed under paragraph 6, without
the authorization of the right holder, including use by the government
or other persons authorized by the government, the Party shall respect
the following provisions:
(a) authorization of such use shall be considered on its
individual merits;
(b) such use may only be permitted if, prior to such use,
the proposed user has made efforts to obtain authorization
from the right holder on reasonable commercial terms and
conditions and such efforts have not been successful within
a reasonable period of time. The requirement to make such
efforts may be waived by a Party in the case of a national
emergency or other circumstances of extreme urgency or in
cases of public non-commercial use. In situations of
national emergency or other circumstances of extreme
urgency, the right holder shall, nevertheless, be notified
as soon as reasonably practicable. In the case of public
non-commercial use, where the government or contractor,
without making a patent search, knows or has demonstrable
grounds to know that a valid patent is or will be used by or
for the government, the right holder shall be informed
promptly;
(c) the scope and duration of such use shall be limited to
the purpose for which it was authorized;
(d) such use shall be non-exclusive;
(e) such use shall be non-assignable, except with that
part of the enterprise or goodwill that enjoys such use;
(f) any such use shall be authorized predominantly for the
supply of the Party's domestic market;
(g) authorization for such use shall be liable, subject to
adequate protection of the legitimate interests of the
persons so authorized, to be terminated if and when the
circumstances that led to it cease to exist and are unlikely
to recur. The competent authority shall have the authority
to review, on motivated request, the continued existence of
these circumstances;
(h) the right holder shall be paid adequate remuneration
in the circumstances of each case, taking into account the
economic value of the authorization;
(i) the legal validity of any decision relating to the
authorization shall be subject to judicial or other
independent review by a distinct higher authority;
(j) any decision relating to the remuneration provided in
respect of such use shall be subject to judicial or other
independent review by a distinct higher authority;
(k) the Party shall not be obliged to apply the conditions
set out in subparagraphs (b) and (f) where such use is
permitted to remedy a practice determined after judicial or
administrative process to be anticompetitive. The need to
correct anticompetitive practices may be taken into account
in determining the amount of remuneration in such cases.
Competent authorities shall have the authority to refuse
termination of authorization if and when the conditions that
led to such authorization are likely to recur;
(l) the Party shall not authorize the use of the subject
matter of a patent to permit the exploitation of another
patent except as a remedy for an adjudicated violation of
domestic laws regarding anticompetitive practices.
11. Where the subject matter of a patent is a process for
obtaining a product, each Party shall, in any infringement proceeding,
place on the defendant the burden of establishing that the allegedly
infringing product was made by a process other than the patented
process in one of the following situations:
(a) the product obtained by the patented process is new;
or
(b) a substantial likelihood exists that the allegedly
infringing product was made by the process and the patent
owner has been unable through reasonable efforts to
determine the process actually used.
In the gathering and evaluation of evidence, the legitimate interests
of the defendant in protecting its trade secrets shall be taken into
account.
12. Each Party shall provide a term of protection for patents of
at least 20 years from the date of filing or 17 years from the date of
grant. A Party may extend the term of patent protection, in
appropriate cases, to compensate for delays caused by regulatory
approval processes.